Ex Parte Senften

Patent Trial and Appeal Board

Jul 21, 2016

13280648 (P.T.A.B. Jul. 21, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/280,648 10/25/2011 David Senften 10526-1 1014
16464 7590 07/21/2016
Evans & Dixon, LLC
Metropolitan Square
211 N. Broadway, Suite 2500
St. Louis, MO 63102
EXAMINER
FLETCHER, MARLON T
ART UNIT PAPER NUMBER
2837
MAIL DATE DELIVERY MODE
07/21/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte DAVID SENFTEN
________________

Appeal 2015-001925
Application 13/280,648
Technology Center 2800
________________

Before TERRY J. OWENS, CATHERINE Q. TIMM, and
JULIA HEANEY, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 4, 5, 7–15, and 17–21. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellant claims an electronic musical instrument. Claim 4 is
illustrative:
4. An electronic musical instrument comprising:
a neck having a length with opposite proximal and distal
ends;
a plurality of manually operated electric sensors on the
neck, the plurality of sensors being arranged at spaced positions
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along one side of the neck length between the neck proximal
and distal ends;
electronic sounds producing control circuitry of the
instrument communicating electrically with each sensor of the
plurality of sensors;
a string extending over each sensor of the plurality of
sensors;
each sensor of the plurality of sensors comprising an
electrically conductive contact on the neck; and
the string being the only string on the instrument, the
string being an electrically conductive string and being
manually movable to engage with the electrically conductive
contact of each sensor and thereby operatively embodying a
manually operated switch at each sensor.

The References
Guthrie US 2,861,494 Nov. 25, 1958
Murata US 5,040,447 Aug. 20, 1991
Sullivan US 2008/0028920 A1 Feb. 7, 2008
The Rejections
The claims stand rejected under 35 U.S.C. § 103 as follows: claims 4,
5, 7, 9, 11–15, 17, and 19–21 over Murata in view of Sullivan, and claims 8,
10, and 18 over Murata in view of Sullivan and Guthrie.
OPINION
We reverse the rejections. We need address only the independent
claims (4, 11, and 20).1 Those claims require an electronic musical
instrument comprising a neck having a plurality of spaced-apart sensors
(claim 4) or an electrically conductive contact (claims 11 and 20), and an

1 The Examiner does not rely upon Guthrie for any disclosure that remedies
the deficiency in the references applied to the independent claims (Final
Act. 5).
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electrically conductive string extending over the sensors or contact, wherein
the string is the only string on the instrument.
Murata discloses a guitar-shaped electronic musical instrument
comprising a neck (1) and a body (2) (col. 3, ll. 13–14; Fig. 1). The neck (1)
has a fingerboard (1a) comprising 16 frets (9) along it at predetermined
intervals (col. 3, ll. 27–28). Spaced across the width of the fingerboard (1a)
between each two frets (9) are six pitch designation switches (PSW), each in
a position corresponding to one of six optional fret strings (3) which can be
stretched along the length of the fingerboard (1a) to guide the instrument
player’s fingers to the desired fret position (col. 3, ll. 15–17, 27–33; col. 4,
ll. 48–49). Each PSW has a fixed contact (18) and an opposing movable
contact (20), the fixed contact (18) being secured to the neck (1) and the
movable contact (20) being mounted on the underside of a raised portion of
a flexible sheet (19) which covers the entire fingerboard (1a) and has,
between each raised portion, a portion which contacts the neck (1) (col. 4,
ll. 20–26; Fig. 2). On the upper side of each raised portion is a transparent
top key (24) having therein a fret light emitting diode (LED) (10), the
illumination of which during use of the instrument indicates that the top
key (24) is to be pressed to turn on the PSW by moving the movable
contact (20) into contact with the fixed contact (18), thereby causing a pitch
designation signal to be sent to a central processing unit (CPU) (col. 3,
ll. 35–38; col. 4, ll. 34–39, 45–48). The musical instrument’s body (2) has
six trigger switches (TSWs), each at one end of a trigger string (4) (col. 3,
ll. 39–45). ”Six trigger LEDs 12 are provided on the body 2, under the
central portion of each trigger string 4” (col. 3, ll. 43–45). “With selective
turning-on of trigger LEDs 12, for the strings among the six trigger strings 4
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to be picked, the direction of picking or tempo of picking is shown visually”
(col. 3, ll. 45–48). “[C]orresponding fret LEDs 10 and trigger LEDs 12 are
turned on to indicate the order of fingering positions of pitch designation
switches PSW and direction of picking” (col. 5, ll. 41–44).
Sullivan discloses an electronic musical device (10) comprising a
body (12) with a fingerboard (14) having along its length a series of metal
strings (22) at right angles to a series of equally-spaced frets (20) (¶¶ 53–55;
Figs. 1, 2). “In the preferred embodiment of the musical device 10, there are
four strings 22 although there could be fewer or greater than four strings 22”
(¶ 55). ”Pressing on the string 22 between two frets 20 will make electrical
contact between the two frets 20” (¶ 59). The musical device (10) normally
is played with the fingerboard (14) facing up and can be played with both
hands as with a piano (¶ 58), and due to having multiple strings, “[i]nstead
of having to cover an entire range of notes horizontally, the musical device
adds the back-and-forth vertical dimension and so allows for a much greater
range of notes in a compact size” (¶ 23).
The Examiner argues that “[i]t would have been obvious to one of
ordinary skill in the art at the time of the invention to utilize the teachings of
Sullivan with Murata et al., because the teachings allow the conductive
string [to] provide the connection and operation of the sensor, wherein
Murata et al. alone provide a touch of the sensor for electronic operation”
(Final Act. 4) and “[t]he Applicant is merely choosing from a finite way of
providing electrical contact between switch elements to provide a
predictable result of electrical switching based on string movement”
(Ans. 4).
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Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
In Murata’s instrument, contact between the fixed (18) and
variable (20) contacts is the result of the key top (24) above those contacts
being pressed in response to its fret LED (10) being illuminated (col. 4,
ll. 34–39, 45–48). That contact is independent of whether the optional fret
strings (3) are present (col. 4, ll. 48–49). The Examiner does not establish
that one of ordinary skill in the art would have had an apparent reason to
eliminate or modify Murata’s key top (24)/contact (18, 20) structure such
that the electrical contact which turns on the PSW is provided by contact
between an electrically conductive string and another electrical contact. Nor
does the Examiner establish that such contact would provide Murata’s
desired LED (10) illumination (col. 3, ll. 33–38; col. 4, ll. 45–48; col. 5,
ll. 41–44), or that one of ordinary skill in the art would have had an apparent
reason to eliminate that illumination.
The Examiner argues that “it would be obvious to one skilled in the
art to reduce the strings to one string, wherein the utility isn’t changed”
(Ans. 2), and that “[i]t would be obvious to use one string to reduce the
number of strings played and to reduce the number of tones played by
plucking, since a user can select to play a single string, wherein this is
merely a design choice” (Final Act. 4).
The Examiner does not establish that use of a single string in Murata’s
instrument would not change the utility of the instrument for improving a
multi-string picking technique and associated finger positioning technique
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(col. 2, ll. 16–23; col. 3, ll. 15–19, 45–55; Fig. 1), or that Murata would have
provided one of ordinary skill in the art with an apparent reason to use on the
instrument only a single string (i.e., either one fret string (3) or one trigger
string (4)). Nor does the Examiner establish that in view of Sullivan’s
disclosure that multiple strings allow for a much greater range of notes in a
compact size (¶ 23), Sullivan would have provided one of ordinary skill in
the art with an apparent reason to use a single string. The Examiner does not
point to support in the applied references for the Examiner’s assertion that
one of ordinary skill in the art would have used a single string to reduce the
number of tones played (Final Act. 4).
Thus, the Examiner has not established a prima facie case of
obviousness of the Appellant’s claimed musical instrument.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 4, 5, 7, 9, 11–15, 17,
and 19–21 over Murata in view of Sullivan, and claims 8, 10, and 18 over
Murata in view of Sullivan and Guthrie are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED